Not all divisionals are created equal – Current divisional patent practice in New Zealand

Changes to New Zealand patent law, brought about by the introduction of the Patents Act 2013 (the New Act), are intended to encourage the Patentee to “plant their flag” as quickly as possible so as to provide an increased degree of certainty to third parties from a relatively early stage. Among the many changes made, are those dealing with divisional applications during examination. However, these changes only apply to applications deemed to have a filing date after 13 September 2014 (New Act cases).

Highlighted below are some significant differences in divisional practice for New Act cases compared to divisional applications filed under the Patents Act 1953 Act (the Old Act):

1.Examination must be requested within 5 years of the original filing date.
This deadline effectively prevents any New Act divisional patent applications being filed beyond 5 years from the complete filing date of the original application.

Under the Old Act, there is no such time limit for requesting examination based on the original application. Therefore, there is no restriction on the ability to “daisy chain” as many successive divisional applications as desired, throughout the term of the original parent case.

It should be noted that divisional applications filed from Old Act cases will themselves be deemed to be Old Act cases, provided post-dating is requested at the time the divisional application is filed. Hence, we will see the “daisy chain” practice continuing, possibly up to 2034, when the last of the Old Act cases is due to expire.

2.Divisional applications must be filed within the initial response period set by the Commissioner after issuance of the first examination report. Otherwise a “substantive response” must be filed on the parent application.

Under the Old Act, a divisional application must be filed before its immediate parent application is accepted or abandoned. It is not possible to file after this time. This is still a requirement under the New Act. However, there are now additional requirements that need to be considered.

On issuance of the first examination report, the Commissioner will set an initial deadline of 6 months to file a “substantive response”. If a subsequent report issues, a new response deadline will be set (up to 3 months). A 1-month extension can be requested retrospectively. However, any subsequent response deadline or extension cannot extend beyond the 12 month final acceptance date that applies once the first examination report has been issued. The application will be deemed abandoned if the applicant fails to meet the response deadline.

A “substantive response” requires that all grounds of objection raised in the examination report be addressed either by amendment and/or by a fair and substantial answer to the report. If the Commissioner deems that the response filed by the applicant does not meet this requirement, a shortened period of 1 month will be given to remedy the response.

A divisional application can be filed any time within the response period set by the Commissioner without filing a “substantive response” on the parent application. However, if a divisional application is filed in the 1-month extension period a “substantive response” must be filed on the parent application.

3.Divisional applications cannot contain claims for substantially the same matter as claimed in the parent application.The New Act requires that the divisional application must not include a claim or claims for substantially the same matter as claimed in the parent application (and vice versa). A shortened 2-month response period will be set by the Commissioner to amend the claims if they are considered to be “substantially the same” as the claims of the parent application. In practice, this will likely mean that the application will not be fully examined until this requirement is satisfied.

Similar provisions apply under the Old Act. In particular, the examiner may require that the divisional or parent case be amended to remove claims for substantially the same subject matter. However, there is no time frame imposed by the examiner in dealing with this issue.

4.Divisional applications may lead to “self-collision” with the parent application.
Under the New Act, “whole of contents” novelty operates in combination with added subject matter. Additionally, each claim can only have a single priority.

The “self-colliding” or “poisonous priority” divisional becomes an issue when a claim in a divisional application is not entitled to the earliest priority date of its parent. ,This is because under the New Act “whole of contents” novelty operates. The divisional application can then be anticipated by its parent (or vice versa).

Therefore, when filing a divisional application, consideration should be made as to whether there is any added subject matter that is not present in the original priority application. Such subject matter should be in separate claims, for both the parent and divisional applications.

In conclusion, changes to New Zealand patent law, brought about by the introduction of the Patents Act 2013, have resulted in changes in divisional patent practice for New Act cases. These New Act divisional applications are treated quite differently and this should be kept in mind during examination.

This article was written by Sarah Couper.

If you have any specific enquiries about this article, please contact Paul Jones or
Debra Tulloch.